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2281 Interviews in > - 2200 Citation of Prior Art and Ex Parte Reexamination of Patents
2281 Interviews in >Ex Parte< Reexamination Proceedings [R-2]
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37 CFR 1.560 Interviews in ex parte reexamination proceedings.
(a) Interviews in ex parte reexamination proceedings pending before the Office between examiners and the owners of such patents or their attorneys or agents of record must be conducted in the Office at such times, within Office hours, as the respective examiners may designate. Interviews will not be permitted at any other time or place without the authority of the Director. Interviews for the discussion of the patentability of claims in patents involved in ex parte reexamination proceedings will not be conducted prior to the first official action. Interviews should be arranged in advance. Requests that reexamination requesters participate in interviews with examiners will not be granted.<
(b) In every instance of an interview with an examiner in an ex parte reexamination proceeding, a complete written statement of the reasons presented at the interview as warranting favorable action must be filed by the patent owner. An interview does not remove the necessity for response to Office actions as specified in § 1.111. Patent owner's response to an outstanding Office action after the interview does not remove the necessity for filing the written statement. The written statement must be filed as a separate part of a response to an Office action outstanding at the time of the interview, or as a separate paper within one month from the date of the interview, whichever is later.
Interviews are permitted in an ex parte reexamination proceeding. In the ex parte proceeding, only ex parte interviews between the examiner and patent owner and/or the patent owner's representative are permitted. Requests by third party requesters to participate in interviews or to attend interviews will not be granted.
Unless the Office of Patent Legal Administration authorizes otherwise, interviews between examiner and the owners of patents undergoing ex parte reexamination or their attorneys or agents must be had in the Office at such times, within Office hours, as the respective examiners may designate.
Interviews for the discussion of the patentability of claims in patents involved in reexamination proceedings will ordinarily not be had prior to the first Office action following the order for reexamination and any submissions pursuant to 37 CFR 1.530 and 1.535. Such interviews will be permitted prior to the first Office action only where the examiner initiates the interview for the purpose of providing an amendment which will make the claims patentable and the patent owner's role is passive. The patent owner's role (or patent owner's attorney or agent) is limited to agreeing to the change or not. The patent owner should not otherwise discuss the case on the merits during this interview.
The patent owner's questions on purely procedural matters may be answered by the examiner at any time during the proceeding.
Where any party who is not the patent owner requests information as to the merits of a reexamination proceeding, the examiner will not conduct a personal or telephone interview with that party to provide the information. Only questions on strictly procedural matters may be discussed with that party. **>The following guidelines are to be followed in determining whether a question is strictly directed to a procedural matter: (A) any information which a person could obtain by reading the file (which is open to the public) is procedural, and it may be discussed; (B) a matter not available from a reading of the file is considered as relating to the merits of the proceeding, and may not be discussed. Thus, for example, a question relating to when the next Office action will be rendered is improper as it relates to the merits of the proceeding (because this information cannot be obtained from a reading of the file). Such a question by a party who is not the patent owner should not be responded to by the examiner<.
The examiner must complete >an< Interview Summary form PTOL-474 for each interview held where a matter of substance has been discussed (see MPEP § 713.04). A copy of the form should be given to the patent owner at the conclusion of the interview. The original should be made of record in the reexamination file, and a copy should be mailed to any third party requester.
The general procedure for conducting interviews and recording same is described at MPEP § 713.01 - § 713.04.
PATENT OWNER'S STATEMENT OF THE INTERVIEW
In every instance of an interview with the examiner, a patent owner's statement of the interview, including a complete written statement of the reasons presented at the interview as warranting favorable action, must be filed by the patent owner. ** >37 CFR 1.560(b). The written statement must be filed either as a separate paper within one month after the date of the interview, or as a separate part of a response to an outstanding Office action, whichever is later.
The requirement for a patent owner's statement of the interview cannot be waived by the examiner. It should be noted that, pursuant to 37 CFR 1.550(d), the failure to file a written statement of an interview as required under 37 CFR 1.560(b) will result in the termination of the reexamination proceeding (in the same way that failure to timely respond to an Office action results in the termination of the reexamination proceeding).<
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